41 F. 48 -

41 F1d 48

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Case Text

FEDERAL REPORTER, vol. 41.

()nthe'.systeOl· of sewers that used these flush tanksto keep it clean. We don't wisbto iDfringe on anyone's rights, and would like to know just what that be !loswered .before We proceed. " On·Au.gu.st4th,in reply to this, Waring writes: "You have got Rogers Field's royalty right, but Drainage Construction Company has a royalty of ten (not one) cents per foot." It should be remembered that the patent in suit is for a system of sewers constructed so as to exclude storm water, in combination with automatic flush tanks. As,a result of this defendant, throughits ordered eight flush tanks, which\.wereduly shipp'ed by the plaintiff.' The defendant paid for these flush tanks the sum of $211.36, includiIig$80 for royalty. Under these circumstances, I do not see how anyinjimction can issue defendallt of these tanks. In view of the whole against theuse by theseI?arties, it seems tR ,me that. this is their ;true po$iti<)n:,Sofaras. the defendant has usedAhe sewerage system .. in $uit, it should pay the license. ,ees as ,outlmed !n,war1l3g's lettero£ August 4th. In other words, I thmk the facts'·in' this impiiedlicense.This is' evidently Waring's understanding of the situation; for he states that he expected to receive a royalty for sewers from the defendant, and that he supposed this suit was brought against the city f6'r stich royalty. I do not think the evidence in this case warrants the bringing of a bill in equity for an injunction and account:' If the 'plainti'ff has a claim; 'it lies i'nthe direction of an action at law for royalties upon an implied license. Bill dismissed.

,.,'

· 'I f

" r,.'·'· , NATi'ONALRuBB1l:RCO.

:

'0.

BOSTON RUBBER-SHOE Co·

10,18110.)

TO DENY V ALInITY OF PATEWI'.

(CirCUit Ccru,rt,

1.

PATENTS

Plaintiffs granted defendants license to manufacture and sell rubber shoes embodying certain by;tbem, on der quarterly statements ot. tbe number thus manufact';lred. and pay a certain, royalty ther.a<ltt·. ;Doefllnda:nts manufactured· uude!' such hoense for three years, and paid the royalties as provided, and then refused so todlh, that, in BIl action to recover the royalties, defendants were estopped frotils6ttirig up the invalidity of the patents as a bar to recovery.
AGAIli8T.INFRINGj!)H:RNT. . .... .

improvement in boots and shoes, of the Williams patents 131,199, 131200, and 131,201, for improvements in overshoes, and of the Williams patent 166,669, for an. improvement in rubber hoots, by an instrument in writing bearing date January 1, 1882, granted to the defendants, the Bostoll RUbber-Shoe Company, the right, license, and privilege to manufacture, use, and sell rubber shoes embodying the inventiolls. or either oftheni, described in the above-named patents, upon the condition that the defendants should keep accurate accounts and render quarterly statements to the plaintiffs of the number of shoes manufactured by them, and containing the patented improvements or either of them, and pay to the plliintiffs five cents on each and every pair of such shoes so called "SDOW excluders," such payments to be made within 30 days of each quarterly statement. This license, though dated in January, 1882, was notactulilly executed alld accepted until September, 1883, and was dated back to cover goods manufactured by the defendants during, the 'interval.' 'The Evoryand Heston patent expired Novenlber 6, 1883. The other patents are still in force. Tne defendan,ts' rendered accounts and paid: royalties under the license, without objection, from Janual'Y 1, 1882, to September 30, 1886. On December 30, 1886, they notified the plaintiffs that they should pay no further royalties until the plaintiffs hltdestablished their claim to the On' March 14, 1887, they notified the plaintiffs that they had consulted counsel, and were adthe Evory and Heston patent had expired, the license.was of no USe to them , and they therefore repudiated it; ; A sampIe of the 'overshoe manufactured by the defendants was produced at the hearing, marked" Defendants' Shoe." It was agreed that during the three months January 1,1887, the defendants made 25,428 pairs of shoes, .each pairlike the sample produced. The defendants made no return of the shoes manufactured during this quarter, and refused to pay royalties for them, and iris to recover royalties under the license on these shoes that this suit was bro\Jght. Numerous defenses were set up in the answer, but those only will be considered which were relied upon at the hearing. . bThedefendants insist that the declaration is not sufficient to thorize judgment for the plaintiffs on the facts proved. But I think it is sufficiently alleged, according to the rules of procedure in force in this state, that the defendants accepted the license, and manufactured ·This is sufficient to show an implied undertaking to paythe royalties provided for in the license. 2. The defendants also insist that the shoes manufactured by them do not contain the improvements described in any of tlie patents except the expired Evoryand Heston patent. But it is evident frOnl inspection that the sample produced has the double composed of extensions,of the vamp and quarter folded on each side of the instep, 'and il buoIde'and flap-tongue arranged to draw equally on each side of ·the quarter across the instep; which is the featUre of the Williams pat:entl31,2G1. ,The sample is also composed oftextile fabric and rubbei, having an i1lnerupper Quttofitthe last or foot, and an outer uppercut v.41F.no.1-4

/lIsa maiptain that the patent 131,,201 by the ,al1d .Heston pa;tent, and therefore aqd ;that the first : ,Qf the Williams ·patent 166,669, being fora,11,iwpr.oved boot, is not infril)ged by the use of the invention in the ,manufactuf.e of !\hoes. I think the defendants have failed in their attempt to show thatthe 131,201 isa repetition of the Evory and .J;Ieston,patent.. This patent was heW valid byJudgeSHU'MAN in WillY 2 Fed. .. 683., It manifest except for the tpey, have!)o l'ightJo ltPply to the IDl1nufa,cture .ofshoes a ,patented .;ill\ provement for. boots.. from thil\" consideration, it from the date .,of until after fOJ; which brppght in tqilil lJ.¢;iQn"thedefeIldantsacted,W1AI:lt:the license ./!-nd: ,itll: without Qpjection up to S,eptelAPer,30, lS86,1Pl<lltw.'not until 18S7" :that they mad,e anY:8tttfl\llPti ., .therefore s.etting up :the'in;validity, oft1)e,patepts';'J " ,; , , ,. defe.n!\e is: tlw:t:the,paten:tshave i.nfdnged. by other areduQ,lmdtPllt have the necesI1liltoP tOl,these contain,a ,lj,p pytthe: ,pl8jill,t,itTs to protect against a,l).Q ,has been depided:.by ,JUdge. Cour in t4i8 fhere ,is IlO il:»pHedcovenant that l!qq\'l Pl19teption; McKa,y V'. $rn1l,h, 39 Fed.:Q,ep. u pJn,intjffs to for Ordl,'lredaccordlngly., , :
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